Ex Parte Sanet

Patent Trial and Appeal Board

Jan 31, 2017

13623667 (P.T.A.B. Jan. 31, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/623,667 09/20/2012 Morton J. Sanet Sanet/Chinese DIV 8533
27316 7590 02/01/2017
MAYBACK & HOFFMAN, P.A.
5846 S. FLAMINGO ROAD #232
FORT LAUDERDALE, FL 33330
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
02/01/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MORTON J. SANET
____________________

Appeal 2014-006331
Application 13/623,667
Technology Center 3700
____________________

Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
SEAN P. O’HANLON, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Morton J. Sanet (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to reject claims 1–20 for non-statutory obviousness-
type double patenting over claims 1–20 of Sanet (US 8,408,914 B2, issued
Apr. 2, 2013) 1 and under 35 U.S.C. § 101 as being directed to non-statutory

1 The subject application is a divisional application of U.S. Patent Application
Serial No. 11/443,568, filed May 31, 2006, now U.S. Patent No. 8,297,978.
See Spec. para. 1. U.S. Patent No. 8,408,914 (U.S. Patent Application Serial
No. 13/223,925, as referenced by the Examiner in the Obviousness-Type
Double Patenting rejection (see Final Act. 3)), is a continuation-in-part of U.S.
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subject matter. An oral hearing in accordance with 37 C.F.R. § 41.47 was
held on January 19, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a method for learning Chinese
character script.” Spec. para. 3; Fig. 1. Claims 1 and 20 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method for creating scripts of Chinese-character-based
languages, which comprises:
placing in a key-symbol dictionary bridge entries in the
form of text viewable on at least a portion of at least one
dictionary page, each of said bridge entries:
being respectively associated with a single Chinese
radical within a set of Chinese radicals;
having the single Chinese radical as a symbol;
having a single keyword corresponding to a given
meaning of the single Chinese radical, the single keyword:
being in a user’s language and having letters
in the user’s alphabet; and
including therein a bridge comprised of at
least one of the letters; and
having a plurality of different memory joggers, each
of the different memory joggers being a word in the user’s
language containing therein the bridge;
transcribing on at least one page of the key-symbol
dictionary a list of user-recognized radicals in a Chinese-
character-based language;
transcribing, for each item in the list:

Patent Application Serial No. 11/443,568, now U.S. Patent No. 8,297,978.
See Final Act. 3; see also id. at 5; Br. 17; U.S. Patent No. 8,408,914, Cover
Sheet.
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the bridge contained within the key-symbol
dictionary associated with the respective one of the user-
recognized radicals; and
the keyword contained within the key-symbol
dictionary associated with the bridge and the respective
one of the user-recognized radicals;
identifying a complex Chinese multi-character to be
learned;
transcribing a set of at least two of the user-recognized
radicals within the complex Chinese multi-character to be
learned;
transcribing a mnemonic in the language of the user for
recalling the written form of the complex Chinese multi-
character, the mnemonic being based upon the keywords,
memory joggers, and bridges associated with the recognized set
of the at least two user-recognized radicals within the complex
Chinese multi-character; and
transcribing the recognized set of the user-recognized
radicals to form the written multi-character utilizing the
mnemonic.

ANALYSIS
Obviousness-Type Double Patenting Rejection
Appellant advocated for a reversal of the rejection under 35 U.S.C.
§ 101, and presumably believed there to be at least some chance of that
outcome. See Br. 17–34. As such, Appellant was of the belief that the
claims in their current form would potentially be allowed and issued in a
patent. See id. at 18 (“If the Section 101 rejection is invalid and the claims
at issue are allowable -- as no other reason remains to prevent allowance --
then Appellant would file a Terminal Disclaimer upon such a holding,
making the entire application allowable.”).
As discussed infra, the Examiner did not err in rejecting claims 1–20
of the subject application under 35 U.S.C. § 101. In this case, Appellant has
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not apprised us of error in the Examiner’s obviousness-type double patenting
rejection of claims 1–20 of the subject application over claims 1–20 of
Sanet. Thus, we sustain the Examiner’s double patenting rejection.

101 Rejection
Appellant does not present arguments for independent claim 20 or
dependent claims 2–19 separate from those presented for independent claim
1. See Br. 18–34. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv). Claims 2–20 stand or fall with claim 1.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
The Supreme Court characterizes the second step of the analysis as “a search
for an ‘inventive concept’ — i.e., an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.

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According to Alice, the first question to be settled is whether claim 1
of the subject application is directed to a patent-ineligible concept. Our
reviewing court, relying on Supreme Court precedent, has “consistently
‘refused to find processes patentable when they merely claimed a mental
process standing alone and untied to another category of statutory subject
matter[,] even when a practical application was claimed.’” CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)
(quoting In re Comiskey, 554 F.3d 967, 980 (Fed. Cir. 2009)). “Such a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101.” Id. at 1373.
In this case, each of the method steps of claim 1 “can be performed in
the human mind, or by a human using a pen and paper.” See Cyber Source
Corp., 654 F.3d at 1372 (relying on the Supreme Court’s decision in
Gottschalk v. Benson, 409 U.S. 63, 67 (1972), for the proposition that
“methods which can be performed mentally, or which are the equivalent of
human mental work, are unpatentable abstract ideas”). For example, the
“placing” step of claim 1 can be performed by a human writing (i.e.,
placing) keyword bridge entries of user-recognized Chinese radicals in a
key-symbol dictionary. Similarly, the “transcribing” and “identifying” steps
of claim 1 can be performed either in the human mind, or by a human
writing (i.e., transcribing) the user-recognized Chinese radicals or
mnemonics. Thus, the method steps of claim 1 are seen as being directed to
the abstract idea of a method for organizing human activity. See Final Act.
3–4, 7; see also Ans. 4; Alice, 134 S.Ct. at 2356. In other words,
Appellant’s claimed method is just a certain prescribed way for a human
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being to create a language script and is, thereby, an abstract idea in terms of
claiming a method of organizing human activity.2
As we noted supra, according to Alice, the question to be settled next
is whether claim 1 of the subject application recites an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than an abstract idea. According to Supreme Court
precedent, “the machine-or-transformation test is a useful and important
clue, an investigative tool, for determining whether some claimed inventions
are processes under § 101,” but “is not the sole test for deciding whether an
invention is a patent-eligible ‘process.’” Bilski v. Kappos, 130 S. Ct. 3218,
3227 (2010). In this case, Appellant contends that the machine prong of the
“machine-or-transformation test” is met “[b]ecause the method [of claim 1]
produces what can be a book or dictionary [and that] this dictionary can be
considered a machine that is specifically devised and adapted to carry out
the process . . . or it is simply creating an article of manufacture – a physical
dictionary.” Br. 27. Appellant further contends that the transformation
prong of the “machine-or-transformation test” is met “because the pages of
the dictionary are transformed from one state (a blank book) to another state
(with text on its pages formed in a particular way).” Id. at 29; see also id. at
27–28. Essentially, Appellant’s contention that (1) the method of creating a
book or dictionary of claim 1 satisfies the machine prong of the machine-or-

2 Indeed, Appellant acknowledges that the method of claim 1 can be
performed by a human. See Br. 33–34 (“[T]he claimed invention [is] a
method of providing a particular dictionary and then having a user supplement
that dictionary with separate dictionaries containing radicals and complex
Characters that the user knows and/or wishes to learn based upon their current
knowledge.”).
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transformation test, and (2) the “transcribing” aspects of claim 1 satisfy the
transformation prong of the machine-or-transformation test amounts to
arguments that creation of a book or dictionary and the transcribing
recitations of claim 1 ensure that claim 1 is directed to significantly more
than an abstract idea.
In response to Appellant’s contention that creating a book or
dictionary satisfies the machine prong of the machine-or-transformation test
of claim 1, the Examiner “takes the position that a dictionary cannot be
considered of a machine since [it] doesn’t meet any of the characteristic[s]
of being a machine or an apparatus.” Final Act. 7; see also Ans. 4. Further,
in response to Appellant’s contention that the “transcribing” aspects of claim
1 satisfy the transformation prong of the machine-or-transformation test, the
Examiner determines:
In order to meet the transformation test one must transform of an
article means that the article has changed to a different state or
thing (see MPEP 2106 page 2100-15). In this particular case, the
[E]xaminer takes the position that no matter transformation
exist[s]. The condition of physical transformation is shown when
an article has undergone some sort of change in its physical
property. Changing to a different state or thing usually means
more than simply using an article or changing the location of an
article. A new or different function or use can be evidence that
an article has been transformed. In this particular case, the act of
transcribing information into an empty book does not change the
physical property of the book. An act of transcribing also refers
to a type of human based action that has been considered to be
ineligible type of transformation (see MPEP 2100.15).
Ans. 4; see also Final Act. 7.
Claim 1 is not directed to a method of creating a book or dictionary.
The claim is directed to a method of creating Chinese-character-scripts.
Apart from the template key-symbol dictionary, claim 1 does not link the
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Chinese-character scripts to a tangible item such as a book or dictionary.
Thus, claim 1 is not tied to a particular machine or apparatus. Claim 1 also
does not transform a particular article into a different state or thing.
At the outset, although claim 1 is not directed to a method of creating
a book or dictionary, we agree with the Examiner that “the act of
transcribing information into an empty book does not change the physical
property of the book.” Final Act. 7; see also Ans. 4. In this case, arranging
Chinese-character scripts is not a “new and unforeseen invention” or an
“emerging technolog[y]” that poses a difficulty in deciding whether the
claim qualifies as a patentable “process.” Bilski, 130 S. Ct. at 3227–28. In
other words, claim 1 does not “effect an improvement in any other
technology or technical field.” See Alice Corp., 134 S. Ct. at 2359–60
(citation omitted); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1354 (Fed. Cir. 2014) (reiterating the Supreme Court’s approach in Alice
Corp); Final Act. 7 (“A new or different function or use can be evidence that
an article has been transformed.”); Ans. 4. Moreover, even accepting,
arguendo, that transcribing Chinese-character-scripts in an empty book in
some sense transforms the book to a different state, this is not the type of
transformation that would transform the nature of claim 1 into a patent-
eligible application. Cf. Mayo, 132 S. Ct. at 1303 (“Regardless, in stating
that the ‘machine-or-transformation’ test is an ‘important and useful clue’ to
patentability, we have neither said nor implied that the test trumps the ‘law
of nature’ exclusion.”). Thus, the machine-or-transformation test provides
further support for the conclusion that claim 1 is directed to non-statutory
subject matter.
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Additionally, considering the steps of claim 1 “as an ordered
combination,” adds nothing significant beyond the sum of their parts taken
separately. See Alice Corp., 134 S. Ct. at 2359. Viewed as a whole, claim 1
simply recites the concept of creating Chinese-character-scripts. As
discussed supra, the “placing,” “transcribing,” and “identifying” steps of
claim 1 are merely steps, which could be performed mentally or by a human
writing information, and, thus, are insufficient to supply the inventive
concept needed to transform claim 1 into a patent-eligible application. See
Final Act. 7 (“An act of transcribing also refers to a type of human based
action that has been considered to be ineligible type of transformation.”);
Ans. 4. In other words, the steps of claim 1 are “not ‘enough’ to transform
an abstract idea into a patent-eligible invention.” See Alice Corp., 134 S. Ct.
at 2360 (citation omitted).
For all the foregoing reasons, the Examiner correctly determined
that claim 1 is directed to non-statutory subject matter. We, thus,
sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. We further sustain the
rejection of claims 2–20, which fall with claim 1.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1–20 for non-
statutory obviousness-type double patenting over claims 1–20 of Sanet.
We AFFIRM the Examiner’s decision to reject claims 1–20 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
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AFFIRMED